Monday, December 7, 2015
PCT FILING IN INDIA
Patents are territorially limited. In order to protect one’s inventions in multiple countries one has these options:-
1. Paris Convention
2. PCT fiing
OVERVIEW OF PCT:
· The PCT is an international treaty with more than 145 Contracting States.
· The PCT makes it possible to seek patent protection for an invention simultaneously in a large number of countries by filing a single “international” patent application instead of filing several separate national or regional patent applications.
· The granting of patents remains under the control of the national or regional patent Offices in what is called the “national phase”.
· The purpose of the PCT is to streamline the initial filing process, making it easier and initially cheaper to file a patent application in a large number of countries.
· By filing through the PCT process one can embark on the path to seek patent protection for an invention simultaneously in every country that is a member to the Treaty.
· The PCT application may be filed at:
Ø National patent office of the Contracting States
Ø International bureau of WIPO, Geneva
Ø African Regional Industrial Property Organisation(ARIPO)
Ø European patent Office(EPO)
Ø Eurasian Patent Office(EAPO)
· An international patent application may be filed by anyone who is a national or resident of a Member Country.
· An international patent application has the effect of a national patent application (and certain regional patent applications) in or for all PCT Contracting States, provided that it complies with the minimum requirements for obtaining an international filing date.
THE PCT PROCEDURE
The PCT procedure consists of the following steps:
(i) Filing of international application in a Receiving Office (RO)
(ii) International Search by an International Searching Authority (ISA)
(iii) International Preliminary Examination by an International Preliminary Examining Authority (IPEA)
An international patent application is filed with national patent Office, or directly with WIPO if permitted by one’s State’s national security provisions. These Offices act as PCT “receiving Offices”. A National/ Resident of a country which is party to the ARIPO Harare Protocol, the OAPI Bangui Agreement, the Eurasian Patent Convention or the European Patent Convention, may alternatively file the international patent application with the regional patent Office concerned, if permitted by the applicable national law.
FILING A PCT APPLICATION IN INDIA:
Nationals/Residents of India can file an international application with the Indian Patent Office at Mumbai, Chennai, Delhi or Kolkata as the Receiving Office or The International Bureau of WIPO as the Receiving Office. An applicant can file up to 10 claims in a PCT application.
A request form must be filed in English or Hindi (PCT/RO/01) needs to be accompanied by :-
The international application must be filed in triplicate. The Regional Office keeps one copy of international application for record named ‘Home Copy’ RO sends one copy of international application to International Bureau (IB) of WIPO named ‘Record Copy’ RO sends one copy of international application to the International Searching Authority (ISA) named the ‘Search Copy’
Fees pertaining to the application are of three types and must be paid within a month from the date of its receipt.
· Transmittal fee
· International Filing Fee
· Search fee
The International Filing Date is considered to be the actual filing date in each country designated in the Request. The Receiving Office India (RO/IN) accords as the international filing date the date of receipt of the international application, after the following checks:
(i) the applicant is a resident/national of India,
(ii) the international application is in English or Hindi,
(iii) The international application contains at least the following element
· an indication that it is intended as an international application,
· the designation of at least one Contracting State,
· the name of the applicant, as prescribed,
· a part which on the face of it appears to be a description,
· a part which on the face of it appears to be a claim or claims.
PCT applications are mostly filed electronically. PCT applications can be filed electronically with any competent receiving Offices which accepts such filings. Preparing the PCT application using the WIPO web service (ePCTfiling) or the software provided by WIPO (PCT-SAFE) helps to prepare your applications by automatically validating the entered data and drawing your attention to incorrectly or inconsistently completed parts. Manage applications are easier in the electronic process, for example, with monitoring time limits for relevant actions. Certain PCT fee reductions are allowed when filing electronically. More details about PCT electronic filing can be found at http://www.wipo.int/pct-safe/en/
INTERNATIONAL SEARCH AND PRELIMINARY EXAMINATION:
Every international application is subject to international search by an International Searching Authority (ISA). An applicant may opt for international preliminary examination by an International Preliminary Examining Authority (IPEA). A few Patent offices in the world have been recognized by the WIPO to function as International Search Authority and International Preliminary Examining Authority under the PCT. The Indian Patent Office (presently, the Delhi branch) started functioning as ISA/IPEA from 2013.
An applicant from India can choose any one of the following ISA/IPEA for international search and preliminary examination Indian Patent Office
· Australian Patent Office
· Austrian Patent Office
· European Patent Office
· State Intellectual Property Office of the People’s Republic of China
· Swedish Patent and Registration Office
· United States Patent and Trademark Office
A PCT international search is a high quality search of the relevant patent documents and other technical literature. It is in those languages in which most patent applications are filed (Chinese, English, German and Japanese, and in certain cases, French, Korean, Russian and Spanish). The high quality of the search is assured by the standards prescribed in the PCT for the documentation to be consulted, and by the qualified staff and uniform search methods of the ISAs, which are all experienced patent Offices.
The results are published in an international search report and a written opinion of the ISA on the potential patentability of the invention. The international search report consists mainly of a listing of references to published patent documents and technical journal articles which might affect the patentability of the invention disclosed in the international application. The report enables one to evaluate chances of obtaining patents in PCT Contracting States.
The international application along with, the International Search Reports are published by the WIPO after expiry of 18months from the priority date of the application.
After establishment of ISR and publication by WIPO, the applicant may opt for International Preliminary Examination (IPE). IPEA establishes International Preliminary Report on Patentability (IPRP). If the applicant does not opt for IPE, the International Bureau of WIPO publishes the Written Opinion of the Search Authority as International Preliminary Report on Patentability.
IPE is optional. If an applicant opts for IPE, there are two kinds of fees payable:
· Preliminary Examination Fees
· Handling fee (for Indian applicants is 221 USD).
THE NATIONAL PHASE:
After the end of the PCT procedure, either after international search or after international preliminary examination and before 30/ 31 months from the priority date , applications for the grant of patents can be filed before the national (or regional) patent offices of the countries in which patent protection is desired. The filing procedure fee and processing are as per the requirements of national law relating to patents in each country. The filing date is the international filing date in all such countries. For grant of patent in India, the applicant has to file a national phase application in India before the expiry of 31 months from the priority date of the application. The international application as filed under the PCT is treated as corresponding application in India.